Friday, February 06, 2015

WIPIP session 1: Trademark

WIPIP
Session 1: TM

Deborah
Gerhardt (& Jon McClanahan), Colors

20 years
of Qualitex: who is registering
color? How do marketing folks view color? People remember color images more
accurately/longer than B&W; color cues amplify legibility and familiarity;
send signals about brand personality—can alter target audiences by changing
color; prompts stronger emotional responses than words and images; people make
up their minds in 90 second, and 62% or more of that is based on color.

What does
that mean for TM?Color can express a
lot other than source. Personality, emotion:

Various
registrations for color—universities, Tiffany’s, Zagat’s cover.Post-Qualitex:
143 Color only applications, 0.0%; 2071 for design and color, .06%; millions of
registrations that are not color-based.Number of colors claim: mostly just a single color, though a few claim
up to ten.Red/pink & blue are the most
popular color combinations, followed by brown and white, then gray/silver &
black, then violet/purple & green.Color marks are registering at a much lower rate than design only,
design & color, and neither.38.1%
color only marks go to publication, 23.0% to registration. Some design &
color marks are really what we think of as color only, such as Tiffany’s blue
for catalog covers—the design is the shape of the cover.Design and color: 46.0% published, 59.7%
registered; overall success rate for design only or “neither” is about 74%.

General
trends: increase in applications, registrations; very few end up on
supplemental register and that’s not increasing.Marks with design and color (e.g., Target red
target)—a lot more marks on the supplemental register, but publication and
registration lines are really close together—fewer ITUs here.Marks claiming color but not design, but
there are so few (they are going to recode to move some design + color like the
Tiffany one into the color category).Color only=covers an entire object, or an entire piece of an object—the
Louboutin sole is color only, whereas a stripe on a water bottle is not color
only.

Marks
claming one color by class of goods—neat slide with bubbles representing # of
color marks by color.Registered across
all sorts of classes.

Glynn
Lunney: shades?Color depletion in Qualitex—how many colors does the PTO
think there are?

A: people
tend to register a particular Pantone color.But how it’s coded: PTO codes 12 colors including clear, white, and
black.(Lunney suggests an inherent
masculine bias to this determination.)

Lisa
Ramsey: what evidence are examiners accepting as evidence of secondary meaning?If women like purple, then why should any
competitor be denied the color purple?

A: don’t
know.Red is protected for scaffolding,
who knew?

Jeremy
Sheff: a little dubious of the low numbers here.It’s difficult to determine going by
hand.But just looking at applications
w/colored drawing as part of the file, there’s over 180,000. That could be a
word mark in a particular color, but that would still be relevant for color as
stimulant for demand. Are you excluding that from your scope?

A: they
aren’t necessarily claiming color.

Sheff: but
it’s part of the brand.May want to deal
with that, unless you’re just interested in competitive issues in claming color
per se.

A: Target
has the red target and the outline registered separately, the second for
broader protection.

Sheff:
ultimately, are you issued in competitive issues/foreclosing color for others,
or in the use for branding?

RT: Any
ITUs? Examine Specsavers.Registration/infringement.

A: Wants
to understand what’s going on in the areas where similar colors are registered
for the same class of goods.Is there a
color depletion issue? Maybe Jacobson was right that you didn’t need color only
because color + design is available.(That would have led to the same result in Qualitex, right?)Vast majority of filers appear to be very
experienced filers.

Lunney:
are you going to break down reasons for rejection?

A: Definitely
will look at abandonment data. 80% of color applications have Office Actions;
60% conversion rate, when it’s usually 30%--a lot of them are facing these
barriers.

Q: year to
year trends? Pantone color of the year—do you see it in the PTO?

A: another
fascinating Q to look at.Has also heard
of different cultural preferences for color, but interestingly comparing color
impressions 30 years ago to now there’s less of that—cross-cultural perception
of yellow as happy.

Jeanne
Fromer (& Barton Beebe), The Closing of the Linguistic Frontier in
Trademark Law

[early in
project: more coming soon]

Lisa
Ramsey, Trademarking Everything?

Are we TMing
too many things? How to convince brands to care about the issue/care about
competition? Her focus: protectable subject matter.Need legislative solution, likely
international, though domestic reforms are also important.

Should we
protect anything that’s capable of bearing meaning, as current doctrine allows:
Taylor Swift’s “This Sick Beat” applications for everything from nail polish
toT-shirts.TM application for “I Can’t
Breathe” for clothing.Specimen
carefully uses that term on the tag, but clearly interested in enforcing
against people who are using it on the front of a shirt, despite PTO rule
against registering ornamental
uses.People then do use the term on the
tags, but threaten ornamental uses, often successfully.Or Delicious for shoes, and not used
ornamentally, but then they go after Victoria’s Secret which uses the word on a
T-shirt, and VS can’t win on summary judgment.VS too has used marks on the front of T-shirts, like “Very Sexy,” which
made it hard for them to argue no use as mark.

Etsy store
for tiny gold tags on necklaces; taken down because someone else has a
registration for Tiny Tags for tiny tags on necklaces (disclaims right to “Tags”).This is on the Supplemental Register, but the
recipient took it down.Controls results
for Google searches.Facebook went to
trial on “Timeline”—FB can at least afford to litigate.Oprah couldn’t get summary judgment on “Own
Your Power.”Can we get brands to care
about these abuses?E.g., “How”
registration leading to lawsuit against Chobani for “How Matters.”These are descriptive uses.Need to shift perception of what the point
is: whether people should own words in goods/services.“Candy Crush Saga,” etc.

Acquired
distinctiveness is not a big barrier. Declaration from company about use of
mark. Examiner might search 3d-party use.But what about future users of descriptive terms/colors/designs.Rigorous examination as in patent?Maybe we shouldn’t have protection in the first
place.Likewise w/incontestability.No independent examination.Then you can’t challenge it based on lack of
distinctiveness.Can’t do lack of
confusion/descriptive fair use on motion to dismiss/often even sj.

Shaming
sanctions for TM bullies? Sometimes people withdraw applications or claims
against competitors: Ice Bucket challenge, IPA lawsuit.Also: require more in the way of combination;
require visual perceptibility.Look to
patent law §101 for model for subject matter exclusions. Requires us to
consider international reform. Other measures to balance competition/free
speech—functionality isn’t doing the job.

David
Welkowitz: how do you get around free riders? Even if brands get on board, they
won’t want to give up their ability
to get a TM.

A: That’s
why we need legislative reform. No TM for use on the front of a T-shirt; no
single colors.

Lunney:
most of the expansion has come from the courts—symbol was added to the bill
specifically to exclude trade dress, yet 40 years later Breyer turns around and
says symbol means “anything at all.” May be hard to get legislative action.
Problem is that you get sympathetic Ps and the court stretches the law, then
generate a rule that applies even to ordinary cases. They don’t think of the
case as a regulatory system but it does become such a system.Lots of businesses in the real world have
very small differences in their names; they can register a corporate name w/a
small difference in the state corporate registry.

A: completely
agree that courts are the problem. That’s why we need subject matter reform,
because once you get a right it gets stretched.

U. Shen
Goh, Branding Linguistics: What do Coca-Cola and Chinese Bakeries Have in
Common?

Coca-Cola’s
treatment in Canada v. US. 1975, started filing applications for Chinese
language marks in Canada, but not US. Canada hasn’t been very friendly—decided that
Pepsi-Cola was not confusing w/Coca-Cola.Also Canada had no comparable American doctrine of foreign interests.But in 1992, when renewal came due, they
abandoned.Even though Canada had just
rejected the American doctrine of foreign equivalents—another case decided
there was no confusion between 2 Chinese bakeries (Vancouver/Toronto)—Chinese
word was the same but English translation was different; average Canadian
consumer doesn’t understand Chinese and the audience is the relevant public at
large.So Coca-Cola abandoned.Since then the case law changed and found
that the average consumer is the target consumer/actual consumers of
goods/services.US does have a bit of
shakiness in the doctrine, but does have foreign equivalents.

Currently
we classify all foreign languages that don’t use alphabets or numbers as design
marks in our databases. This is wrong.Word marks receive more protection than design marks, and many marks not
using Latin/Roman characters have multiple presentations/translations.Simplified Chinese may not look the same to
English-only speakers, but it’s similar to capital letters v. lower case in
English.Fluent = know it’s the same.
Western databases should transcribe foreign language marks according to their
official phonetic system.

Western
system depends on letters—type in Coca-Cola, get matches. But if there’s no
letter/alphabet, we traditionally treat it as design mark. Phonetic system:
allows filing alphabetically and numerically. Improve efficiency of database;
impossible to search foreign language marks alphabetically and you have to hire
a firm to do a design search.Would
remove incongruity w/case law, which recognizes foreign language marks as word
marks.

Solves
inconsistency w/int’l trade: MFN/national treatment principles.Mark in China is a word mark; would be a
design mark in the US.

Judicial
treatment: both Canada/US require that the foreign language mark be understood
by average Canadian consumer/ordinary American purchaser. This evidence changes
constantly depending on immigration, int’l trade, brand extension, and
cross-branding. Not just a problem for large corporations.We should assess foreign marks in the same
manner as English language marks: assume a fluent consumer.We treat “aubergine” as having a meaning; don’t
question how high educational level of consumer is. Should always assess for
distinctiveness. A trader should not be able to do in a foreign language what
it couldn’t do in English.

Foreign
marks shouldn’t be translated when assessing for confusion w/marks in the same
language.A fluent consumer doesn’t need
to translate; the monolingual judge does and wrongly assumes that consumers do
the same.Do need translation for
meaning, but that’s just practical.

Foreign
language marks shouldn’t be translated when assessing for confusion w/English
transliteration English language marks can’t expand into claims for homonyms or
homophones. Traders who choose to spell an English mark are stuck with that.
The same rationale should apply to a trader who decides to use a foreign
language mark, and not use any/all of its possible transliterations. One
Cantonese transliteration could be Cheung Kong, Chiong Kung, Chang Jiang, or
more depending on one’s dialect.If we
do it for foreign language we should do it for English.

Foreign
language marks shouldn’t be translated for assessing confusion w/ an English
translation. English language marks can’t expand to claims for synonyms, etc.

Hana Bank:
Korean language, want to transfer into English “Hana Bank.”But there are multiple translations: Hana
means one: One Bank, United Bank, Whole Bank: do they get to claim them all?
Not fair to other traders.

Christine
Haight Farley: you’re arguing not just for changed approaches but changed
standards? It would be easier w/phonetic searching systems for parties to
decide that something is too close in pronunciation, but you seem to advocate
at the end for not having to use that.Chinese companies: script versions of TMs, but Chinese consumers might
prefer a different word—Michael Jordan becoming “flying man.”

A: you can
use transliteration or translation. In China, many companies discover they’ve
been usurped. Their Chinese TM may not be as popular as the TM that became
colloquially popular. Coca-Cola ran a contest and picked the best—good brand
management.

Lemley:
struck by statement about not extending protection to synonyms. Correct to say
you wouldn’t get a registration, but as a practical matter you get control over
them: both in registration where PTO will reject and in practice where likely
confusion will control. Why treat foreign translations any differently? If
people think of it the same way, why allow anyone else to overlap use?

A: There
is a Coca-Cola case that allowed them to control Koke.But that’s more for well-known/popular
TMs.

RT:
disagree—Lollipops and Jellybeans for roller rinks held to be confusing, because not well known and inherently
distinctive. But I love the rest of the proposals.

Why do
people wear T-shirts advertising their affiliation w/brands? Not a new Q, but a
new answer.People are acquiring not any
information about the actual physical product. Economic search cost explanation
doesn’t give us a very good answer, b/c only the brand and not the product is
of concern.TM in theory incentivizes
production of goods w/non-observable qualities, but the value of the brand is
fully observable.

We think
TM has one function of creating clubs/signifying membership. Not simply
self-expression but membership/identification w/ a network of others
associating w/the mark. Our theory separates club aspects from expressive
aspect of the mark.Deven Desai talks
about bits of this but does not delineate badges of loyalty from other
expressive aspects.TM is a way of
telling you something about the individual bearing the TM: an entry ticket into
a club.

Vital that
TM owner is the one that owns the right to exclude.Creating a membership group.Club goods are intermediate b/t public and
private. Semi-enclose things that would otherwise have risk of being public
goods/private production of goods that could otherwise only be produced
collectively.

Ted wears
a Harvard T-shirt. Ted is getting branded with Harvard (like ISO standard).
Harvard is getting branded w/Ted (other consumers know that Harvard is the kind
of school that draws Ted, or at least Ted identifies w/). The value of the T-shirt
goes up and down w/Harvard’s activities. Harvard’s control over production and
distribution affects the value of the club membership.So it makes sense for control over entry to
be in Harvard’s hands.If every single
consumer controls the TM, it loses the ability to cabin this club.[RT: But Harvard will sell anyone a
T-shirt.It does not police the
boundaries of the club and it can’t police the used market nor should it be
able to do so.Compare
Republican and Democratic (or “Democrat”) Party.They can’t protect the “club” aspect and seem
to be robust.]

This gets
us to exactly the opposite of the expressive theory. [But why would this lead
to any right to control the image of the club? Can’t we have the Coca-Cola Kid?] Not simply
about T-shirts. Purchase and use of many products have a club goods aspect
separate from self-expression. Drinking Coke, driving a Mercedes Benz, riding a
Harley Davidson, using an iPhone, eating and McDonald’s.Commercials for these brands often emphasize
club aspects: e.g., Coca-Cola’s “I’d Like to Teach the World to Sing.” Create a
membership group and police its boundaries.

What do we
get this?Facilitate dissemination of
goods that can only come in these kinds of networks; large potential increases
in social welfare. TM already does this but we haven’t been paying
attention.Best way of understanding
dilution is being about this.[Except
then there shouldn’t be expressive exceptions.] Dilution = spreading club benefits
outside the club.

Do we have
some normative suggestions?Exclusivity
is important. Optimal spread of the good if costless is not infinite. Some
point at which it’s too widely spread.[How
is “I’d like to buy the world a Coke” in any way limited?]

Lunney:
complete misuse of the theory of club goods.(1) getting funding to afford public good, (2) setting price that doesn’t
create deadweight losses.Treadmill in
fitness center: could be public if there are few members; congestion = need to
set price/fund creation. You haven’t shown me a congestion externality or using
the congestion to set the price. This is just “if value, then right.”

A: the
congestion is the exclusivity. If everyone does it.

Lunney:
McDonald’s would lose money if everyone ate there?

A:
Yes.Set price to control access. There’s
a reason companies like Members Only name it Members Only. Even McD and Coke exclusivity
is working to provide profit. [Citation needed.]

Gerhardt:
Make assumption that TM owners create brand value and channel it down.

A: no we
don’t.

Gerhardt:
consumers invest in creating brand, should get return at least in form of being
able to use for information.

A: the TM
owner gets to police the boundaries even if it doesn’t create value.

Gerhardt: community
rejected New Coke.Good brands let brand
story change in response.

A: but
mark owners police who can enter the community.

Gerhardt:
should we shut down Pinterest? TM owner doesn't like being pinned by the kind of person who pins images of its products.

A: there
are other interests—not saying shut down Pinterest. This is an important
interest on the other side.

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